Monday, February 17, 2014

I
recently came across a billboard on the side of a telephone booth (yes, those
still exist) in New York City, and stopped dead in my tracks to snap a
photograph of it.

The
primary reason that the advertisement caught my attention was that about three
years ago, I had considered approving a similar advertising campaign. We considered
utilizing a stock photograph of a cheesy Elvis Presley impersonator along with
the tagline: "Not All Imitation Is Flattery."

Now, there
is an ongoing debate in legal circles about whether such commercial
use of a famous persona should be protected as free speech and constitute a form
of parody or fair use, or whether such use could conceivably be an
infringement of the late Elvis Presley's right of publicity and trade dress and trademark
rights.

Absent such a finding of free speech or fair use, the unauthorized commercial use
of a famous person's likeness can constitute an infringement of their right to publicity. This right can be protected under state law, even long after their
death, unless that right has lapsed, or the person's identity is in the public domain.

Last
year, we reported on the legal developments
involving Albert Einstein's likeness and how use of it embroiled General Motors in
protracted litigation.There has
been much written in the academic literature about the fuzzy boundaries between unlawful imitation and flattery. For example, Touro Law Review published an article in 2012 about
this subject.

Aware of
how aggressive Elvis Presley Enterprises (EPE) has been in the past in
protecting Presley's image and likeness, we had contacted EPE to discuss
whether we could obtain a license. This standard "clearance" procedure is a prudent measure, regardless of whether a fair use/parody defense exists.I was
informed by EPE's representative that the Estate would not offer a license for
Elvis' likeness to be used in this manner. (It is possible that the unflattering impersonator we
were considering using may have played a role).

Regardless
of the legal merits of EPE's position, out of respect for "the
King's" intellectual property rights and to avoid the risk of litigation,
we never approved or ran the advertisement.Now, it would appear that Martinson Coffee had a similar idea, and decided to run the advertisement.According to a press release issued by Martinson in October 2013, it is using a media blitz campaign, including with roving trucks emblazoned with the billboards. "The Martinson® Coffee trucks will appear in over two dozen locations during the campaign. The social media launch will run in conjunction with a city-wide advertising campaign. The ads, featured on New York commuter rail stations, subway stations and the like, will focus on proving why Martinson is the Real Joe."I
contacted Martinson Coffee's public relations department by e-mail, to ask if they had sought or received a license
from EPE. This is what they said:"We currently buy our images from a stock image company. They provide all the licenses for all the images they own.

We don’t do anything on our end. They vet those issues out prior."

In other words, the advertising agency utilized "stock photography" and assumed that the stock photography company had acquired and provided all relevant licenses.

However,
the licenses offered for such stock photographs is typically "for editorial use only." Their Terms
of Use specifically state that "Files for
Editorial Use Only cannot be used for any commercial purposes. These files may
contain identifiable brands, locations or people without the proper legal
releases needed for commercial use. They may be used in blogs, magazine
and newspaper editorial applications, or other non-commercial uses."Shutterstock explains the distinction on its website.

Therefore, assuming for argument's sake that Martinson acquired its Elvis impersonator image from such a third party stock image company, its commercial use would clearly fall outside the scope of the editorial use only license.

Consequently, Martinson could not avail itself of the license defense, and could not drag the third party stock image company into the case to indemnify (defend) it.

Further, whatever "releases" the stock image company acquired for use of the image would only involve the model depicted in the photograph -- not the Elvis Presley Estate, who has the legal right and obligation to protect the King's likeness.

Sunday, November 24, 2013

A
progressively-themed company that makes and sells toys that will supposedly help young girls
overcome gender stereotypes has become embroiled in a high-profile copyright
litigation with the Beastie Boys. Toy company GoldieBlox says
on its website:

"In
a world where men largely outnumber women in science, technology, engineering
and math...and girls lose interest in these subjects as early as age 8,
GoldieBlox is determined to change the equation. Construction toys
develop an early interest in these subjects, but for over a hundred years,
they've been considered "boys' toys". By designing a
construction toy from the female perspective, we aim to disrupt the pink aisle
and inspire the future generation of female engineers."

In its
recent viral video commercial touting the ingenuity of young girls who build an elaborate
contraption that can change the television channel, GoldieBlox intentionally
utilized the music and parodied the lyrics from the Beastie Boys' song Girls.

The
Beastie Boys were apparently not pleased with GoldieBlox's unauthorized use and sent a cease and desist letter, alleging copyright infringement and demanding that GoldieBlox end its campaign.

Rather than complying with the demands, GoldieBlox
countered by filing a Declaratory Judgment Complaint against
the Beastie Boys in Los Angeles federal district court, asserting that its
usage was parody and fully protected by the First Amendment.

Given the Beastie Boys' recent unhappy experience with copyright litigation, one suspects that GoldieBlox's executives were well aware that this dispute would erupt, and intentionally developed a strategy inducing litigation to fuel its viral campaign to garner "free" publicity. Whether the gambit works or not is yet to be seen.

After years of litigation, the
Supreme Court ultimately held that 2 Live Crew's commercial parody may very well be
a fair use within the meaning of § 107 of the U.S. Copyright Act, which
states:

"In
determining whether the use made of a work in any particular case is a fair use
the factors to be considered shall include—

(1) the
purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;

(2) the nature of the
copyrighted work;

(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and

(4) the
effect of the use upon the potential market for or value of the copyrighted
work."

On appeal, the
Supreme Court found the aforementioned four factors must each be applied to every situation on a case by case basis, and that the fact that the parody was used in a commercial context alone was not dispositive.

When
looking at the purpose and character of 2 Live Crew's use, the Supreme Court found that
the more transformative the new work, the less will be the significance of the
other three factors. The court found that, in any event, a work's commercial
nature is only one element of the first factor enquiry into its purpose and
character.

Justice
Souter, writing for the majority of the Court, then moved onto the second § 107 factor, "the nature of the
copyrighted work", finding it has little merit in resolving this and other
parody cases, since the artistic value of parodies is often found in their
ability to invariably copy popular works of the past.

The Court found the third factor integral to the analysis, finding that the Ninth Sixth Circuit Court of
Appeals had erred in holding that, as a matter of law, 2 Live Crew copied "excessively" from the Orbison original.

Justice Souter reasoned that the "amount
and substantiality" of the portion used by 2 Live Crew was reasonable in
relation to the band's purpose in creating a parody of "Pretty Woman".

The majority reasoned "even if 2 Live Crew's copying of the original's
first line of lyrics and characteristic opening bass riff may be said to go to
the original's 'heart,' that heart is what most readily conjures up the song
for parody, and it is the heart at which parody takes aim."

The Supreme
Court then looked to the new work as a whole, finding that 2 Live Crew
thereafter departed markedly from the Orbison lyrics, producing otherwise
distinctive music.

Looking at
the final factor, the Supreme Court found that the Court of Appeals erred in
finding a presumption or inference of market harm.

Parodies in general, the Court said, will rarely
substitute for the original work, since the two works serve different market
functions.

While Acuff-Rose found evidence of a potential
"derivative" rap market in the very fact that 2 Live Crew recorded a
rap parody of "Oh, Pretty Woman" and another rap group sought a
license to record a rap derivative, the Supreme Court found no evidence that a
potential rap market was harmed in any way by 2 Live Crew's parodic rap
version.

In fact, the Supreme Court found that it was unlikely that any artist would
find parody a lucrative derivative market, noting that artists "ask for criticism,
but only want praise."

Applying this same analysis in the newly-filed Beastie Boys case, the courts will need to evaluate each of these same factors to determine if Goldiblox's usage was appropriate or improper.

Wednesday, September 25, 2013

The tagline for the 2004 movie Van Helsing was "Adventure Lives Forever." From an intellectual property perspective, it would appear that some fictional characters may try to live forever.Trademark
protection of a fictional character provides the owner with the exclusive right
to use that character in connection with goods and services, as well as the
right to prevent the unauthorized use of the character in connection with goods
and services of infringing third parties.

The notion is that US trademark law serves to protect the public from confusion arising from confusingly similar marks.

But what about trademark law protecting the characteristics of fictional characters that are in the public domain as a matter of copyright law (e.g., Count
Dracula or Sherlock Holmes)? Theoretically, it would seem like trademark protection should not be available for any characters that are fully described in the
public domain work. The reality is not that simple.

If
a derivative character is developed, based upon the character described in public domain materials and is used in
commerce, it is protectable as a trademark in its own right.A concrete
example is that the general features of Count Dracula are free to emulate because they are in the public domain, as the character was contained within Bram Stoker’s novel from 1897. Stoker's book was loosely based upon the historical character of Vlad the Impaler.

Innumerable commercial variants of Stoker's Count Dracula were spawned in the century that
followed, leading to a complex legal landscape.

General Mills' Count Chocula Cereal

For example, Count Chocula is a well-known, trademarked character developed by
General Mills in 1971, in connection with breakfast cereals. Count Chocula is a highly stylized caricature of Count Dracula, made suitable for children. General Mills saw fit to register a federal trademark on the name and character, asserting
that the design was for a character in the category of” supernatural,
fictional or legendary characters; Paul Bunyan; Pied Piper; Robin Hood; Sherlock
Holmes…etc.”

Consequently,
a conundrum arises. If a third party
were to develop a new design for a cereal that included a fictional character based entirely on the Count Dracula described in Bram Stoker’s public domain book, he may still be likely to cause consumer confusion with Count Chocula, and in doing so, violate General Mills' trademark. The strange outcome is that a character that should be free under copyright law to use, may not be so free under trademark law.
Along the same lines, Abraham Van Helsing was described in Stoker's Dracula novel. In 1994, actor Hugh Jackman played Van Helsing in a major motion picture. In 2007, the United States Patent and Trademark Office officially allowed "VAN HELSING" to become eligible for a trademark on a wide variety of action figures, toys and games, and published that mark for opposition.
Yet another example is the Pied Piper of Hamelin. The Pied Piper has been a character fully described as far back as the 14th and 15th centuries. The legendary figure had become fodder for nearly a dozen short stories written by the Brothers Grimm in the 19th Century. Every one of these works has passed into the public domain, as a matter of US copyright law.

The Pied Piper Throughout History

Yet, Dell Publishing Company was able to successfully register "Pied Piper" for "a series of childrens' books" in 1981, a registration that continues to be in full force and effect on the Principal Register of the US Patent and Trademark Office.

Further
complicating matters, as long as trademarks are used in commerce, they can be
valid and enforced in perpetuity. That result means that hundreds of years after the text describing a fictional character has passed
into the public domain, a company that develops a commercial character based
on the public domain work, could still claim a successful monopoly.

Six hundred years after the Pied Piper was first described in published poems and books, an author could not write about him in a children's book today, as the Dell Publishing Company was able to receive a perpetual, federally registered trademark on his name for children's books.As discussed in previous posts, it is not entirely clear that once a copyrighted work passes into the public domain, the fictional characters developed therein become entirely free for public consumption without legal controversy.Indeed, related and derivative intellectual property rights can continue to muddy the waters, leading to complex and strange consequences. This situation occurs because the landscape of US intellectual property law is complex, and different regimes are designed to serve different purposes.US copyright law protects the expression of ideas, but not the underlying ideas themselves. The notion is that a limited monopoly is granted on a tangible expression of an idea, in order to foster a robust environment for authors, painters and other creative endeavors in which they (and their heirs) are appropriately rewarded. Once that monopoly has lapsed, the underlying texts pass into the public domain, giving the public an opportunity to utilize a catalog of freely available works. For example, Mozart or Beethoven's music can generally be played by anyone without fear of a lawsuit by their heirs. William Shakespeare's plays can be reproduced or performed, without fear of paying a royalty.Further, in literature, fictional characters within a literary work are presumed to be simply ideas unless they are sufficiently developed to legally constitute elements of expression protectable under copyright law.However, US trademark law may protect the names, physical appearance, catchphrases, and certain other elements of fictional characters, provided that they are used on goods or services, identify and distinguish the source of the goods or services from those of others, and are either inherently distinctive or have acquired secondary meaning (i.e., meaning in the consuming public’s mind as a source identifier for the relevant goods or services).In conclusion, as we have seen, just because a fictional character was once described in a text that has passed into the public domain as a matter of copyright law, does not end the inquiry. In fact, it is only the beginning, as related rights and derivative works, as well as trademark usage can affect the public's right to freely borrow from, adapt or use those fictional characters.

Friday, September 6, 2013

Entertainment Weekly and Variety reportthat the recent Weinstein/Millennium film “Lovelace” appears to be clear of a possible preliminary injunction that could have kept the film from being released in theaters.

The producers of the film were sued for copyright and trademark infringement in New York federal district court by Arrow Productions, the owner of the copyrights and trademarks on the original adult "Deep Throat" franchise, which starred Linda Lovelace.

The recently-released biopic film stars Amanda Seyfried as Lovelace, a fragile woman who becomes an infamous porn star seemingly happy with her decisions, but who eventually breaks free from her husband and discloses the truth about her treatment in order to prevent other women from getting similarly exploited.

According to the Complaint, the producers used the name "Lovelace" and several minutes of copyrighted material from the 1972 adult film "Deep Throat," without permission. "In fact, the title 'Lovelace' derives its market appeal entirely from decades of cultural cache embodied in the trademarked name Linda Lovelace. … Rather than negotiating licenses for Deep Throat IP, rather than deferring to Arrow’s vision for the Deep Throat brand, Defendants have simply taken what they wanted and crossed their fingers.”

However, despite Arrow's characterization of the producers as having "tak[en] several minutes of copyrighted material" without permission, the truth is not that simple.

Arrow claims that the copyright infringement arises from a "re-creation of a short scene" and a "brief re-enactment of the filming of scenes of 'Deep Throat'," not wholesale theft of copyrighted footage.

Furthermore, Arrow alleges that the value of the "Deep Throat brand" has been "decimated," because it did not approve the film's depictions of exploitation of the film's protagonist. It is not clear if any consumers have been confused into believing that Arrow endorsed or sponsored the film.

Intellectual property law is not so clearly on the side of Arrow. Performing a "re-creation" of an event does not necessarily constitute copyright infringement, simply because that event was filmed.

Arrow's Complaint itself alleged that the 1972 release of the film Deep Throat "was a watershed moment for American culture."

Re-enacting an event does not necessarily violate copyright laws. A reenactment that borrows too heavily from copyrighted material could infringe, however. For example, if the reenacted footage replicated the use of a copyrighted script line by line, it could infringe the screenwriter's rights. Furthermore, copyright law permits a copyright owner to control "public performance" of his work.

A "free speech/fair use" defense could be successfully asserted by Lovelace's producers, based on the argument that the derivative use made was transformative, in that it commented on the event by adding some additional material or perspective.

Consequently, application of this defense would permit some degree of interpretative reenactment as a form of social commentary on the underlying factual events that took place during the filming of Deep Throat.For now, at least, the film's producers have been able to release the movie, but since the Complaint (embedded below) has not yet been dismissed or resolved, further litigation appears possible.

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